About intellectual property

1. Managing Intellectual
Assets
Fall 2011
Hervé Lebret

2. Agenda
 Intellectual Capital
 Intellectual Property
 Why Intellectual Property?
 How to build Intellectual Property?
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3. A few quotes
Baruch Lev, a professor of accounting at New York
University:
“Intangible Assets ranging from a skilled workforce
to patents to know-how account for more than half
of the market capitalization of America’s public
companies.”
Accenture calculates that “intangible assets have
shot up from 20% of the value of companies in the
S&P 500 in 1980 to around 70% today”.
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4. Intellectual Capital
 Human Capital
competences and know-how, experience, culture and values (trust, leadership, common goals…)
 Knowledge Capital
capitalized know-how and experience, documentation and tangible information and data;
 Process Capital
the formalization of the business processes, the activities, the roles, the responsibilities and the
flow of information;
 Network Capital
relations between actors (procurement, sub-contractors, partners, distributors, institutions…);
 Customer Capital
the customer and reference list, the name, the brand visibility;
 Innovation Capital
the technology portfolio, the innovation processes and methods;
 Brand Capital
the brand value which represents the performances of the products and services and the dream
generated for customers…
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5. What is IP? An asset? An investment?
 It is a part of intellectual capital
 It is an intangible (immaterial good)
Intellectual
Property
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6. Forms of Intellectual Property
 Know-How 1886: 'Coca-Cola' is made using a unique combination of
natural flavorings. The formula for 'Coca-Cola' is a closely
guarded secret and it is stored in a bank vault in Atlanta,
Georgia, USA.
 Trademark  ® 1893:
1937: Coca-Cola received a
“design patent” for the contour
 Design/drawings bottle
 Patent June 5, 2002 - P&G Sues Coca-Cola Over Patent -
Procter & Gamble Co. last week sued The Coca-Cola Co.
alleging that its former joint venture partner is infringing
on patented technology that adds calcium to fruit juices,
… seeking an injunction to stop the alleged violation of its
patent, which has been in force since 1988.
 Copyright ©
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7. Know-How
It represents all technical know-how which is not patented.
There is no ownership right on know-how.
But it may benefit from some legal protection
(e.g. unfair behaviors, unfair competition).
Condition: Know-how must remain secret.
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8. Trademark
Conditions to register:
 Novel (not identical or similar to a prior-registered one)
 Non-descriptive
 Not in the public domain
How to register a trademark
1. Look for prior art
2. Choose one or several fields of products
3. Define the geography
4. Register to the adequate office
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9. Design
Rights on design
 No need for formal registration
 Deals with internal and external features of a product or a
design
 Protection: 10 years from market entry
Registration
 Deals specifically with the external appearance of a
product
 Protection: 5 years, renewable 4 times x 5 years
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10. Copyright
Advantages :
 free,
 no registrations.
Weaknesses :
 protects the software, the code
 but not the basic idea, the concept, the algorithm
They give the following exclusive rights :
 Reproduction
 Modification : adaptation, evolution, translation
 Circulation : distribution, licenses and sale
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11. ©  ®
© Copyright, free, mentions year and author
 The author announces and claims rights on
trademark, but it may not have been
registered
® Trademark has been registered and
authorized.
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12. An example (1/3)
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13. An example (2/3)
Experts’ advice (jurist, biz. lawyer, IP
lawyer):
- There is probably no infringement
- Google gave its blessing anyway
- However the second email is an issue
and it is never easy to fight a powerful
player.
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14. An example (3/3)
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15. Patents
A patent protects an invention which is defined as a
technical solution to a technical problem.
In order to be patentable, an invention must be novel, non-
obvious (not be simple evolution of prior art) and can be
applicable (it must have a practical utility)
The protection lasts twenty years if the maintenance fees are
paid in each individual country where is is protected.
A patent has an owner - who is not always the inventor(s) – it
can be sold, transferred, licensed (rented).
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16. What is patent useful for?
 It prevents others from using the technical solution
 It gives the right to grant licenses
 It is a currency, it can be traded
 “It favors technical development”
 It is useful to obtain financing (for start-up for example)
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17. The drawbacks of a patent
 The invention is disclosed
 It does not give a right to use
 It is often difficult to understand
 It is costly!
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18. Patentability conditions
 A patent must have a technical feature
 Exceptions
 Discoveries
 Esthetic creations
 Games and software
 Methods of treatment and diagnostics
 Inventions contrary to ethics/morals
 Animal and vegetal species
 A practical utility
 Newness/novelty
 Inventiveness (« non obviousness »)
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19. Patentability categories
 Product
Object or material element which is new
 Process
Means to obtain a product or a result (method,
indication)
 “Product by process”
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20. IP has a cost (… and a duration)
 Trademark : about CHF10k in Europe/USA, 10 years, renewable
 Copyrights: free, 50 to 70 years after the death of the author
 Know-how: free without limitation; but difficult to protect
 Patent : several tenths of kCHF, 20 years
Example: Cost of a Europen Patent (6 countries)
80000 80000
70000 70000
60000 60000
50000 50000
CHF
40000 40000 Yearly Cost
30000 30000
20000 20000 Cumulative
cost
10000 10000
0 0
0
2
4
6
8
10
12
14
16
18
20
Year
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21. IP requires a strategy
Intellectual property:
 has many forms
 is dynamic
 is complex
 is costly
therefore,
it is essential to know why
one wishes to own IP
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22. How to build IP: the patent case
It is important to assess first an invention:
 can it be patented: new, non obvious, applicable?
 why a patent: which strategy?
 a patent filing will be a process with many constraints
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23. Filing: many possible choices
Filing Examination Issuance Administration
Switzterland CH CH CH CH
Search
International PCT
European EP EP EP
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24. A typical patent filing
Priority
year
Priority PCT Filing Preliminary US US US
Filing examination
Filing examination
patent
JP JP
JP
Filing examination patent
EP EP Choice
Filing examination of countries
12 months max. 18 months
Priority date International National
filing filing
CH D FR UK
patent patent patent patent
30 months max.
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25. Confidentiality and filing
Patent
application
filing
18 months
Should be short! Evaluation of invention
Issuance
Invention date* Invention disclosure Publication of the (I.e. patent is
to a tech. transfer Priority date* application (available to granted)
(written down in
office the public)
lab note books)
Examination period which duration
is unknown
Until filing, confidentiality is critical and a must! After publication, patent is
Until publication,
CDA to be used with the outside world disclosed to the public and
confidentiality is better, but
no confidentiality need
protection is guaranteed
anymore
after filing. CDA / NDA
should be a preferred tool
NB : 1- the USA have a grace period. It is possible to file in the 12 months following a disclosure.
2- (*) : in Europe the priority date gives anteriority; in the USA, the invention date is the final
anteriority date in case of competitive application.
However these 2 rules are being cancelled with the new US Patent Law.
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26. The beginning of an adventure
An IP strategy is usually built with one or several “patent
attorney(s)”
 Writing an application is technical and legal
 To have a patent granted is a lengthy and very uncertain process
 A good strategy is critical
 geography, portfolio
 a constant competitive analysis is necessary
 A strategy of protection against competition and with partners is necessary
(IP never gives direct rights but the rights to protect yourself against infringers)
 The commercial strategy has to be linked to the IP strategy
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27. Patent case study (1/7) The initial filing
 a title
 inventors
(individuals)
 an owner
(individuals or an
institution)
 a geography
 a priority date
 a filing date
 a publication
date
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28. Patent case study (2/7) The PCT filing
 a title
 inventors
(individuals)
 an owner
(individuals or an
institution)
 a geography
 a priority date
 a filing date
 a publication
date
 finally (ideally!) a
date of issuance
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29. Patent case study (3/7) The search report -1
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30. Patent case study (4/7) The search report -2
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31. Patent case study (5/7) The Issued Patent
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32. Patent case study (6/7) The regional filings
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33. Patent case study (7/7) The content
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34. The content of a patent application
As a summary, a patent application includes:
• Claims • Revendications
• Description • Description
• Drawings • Dessins
• Abstract • Résumé
The essential additional information:
• a title
• inventors (individuals)
• an owner (individuals or an institution)
• a geography
• a priority date
• a filing date
• a publication date
• finally (ideally!) a date of issuance
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35. The specific case of the USA *
- The US provisional filing
Not published
Limited to one year
Not examined
A written description
No drawing, no claim necessary
When?
when time is short
when strategy (on how) to proceed is unclear
when short-term budget is limited
-The 12-month grace period after disclosure or publication
*: might be canceled soon with new US patent law
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36. Search for prior art
Inventors then examiners
must check state of the art
through prior art search
The search is similar to
a publication bibliography and
includes the web, the technical
journals as well as patent databases.
SRI is supporting search through
visits to IPI (Swiss Federal Institute of
Intellectual Property) in Bern
(www.ipi.ch)
Tools are also available on the web
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37. The European Patent Office
http://worldwide.espacenet.com
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38. Derwent
http://apps.webofknowledge.com
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39. Google Patent Search
http://www.google.com/patents
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40. University licenses
Many inventions and patent application belong to universities (or other
institutions)
Therefore a negotiation to obtain a license is usual
The philosophy of licensing is as follows:
 EPFL deserves some reward for the IP use
 It is based on an upfront payment and royalties
 In the case of start-ups the upfront payment can be replaced with
equity
 The licensee maintains the IP protection from the date of the license.
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41. Negotiation: a few ideas…
Never forget it is a dynamic process with iterations
IP is intangible so its value is difficult (impossible?) to assess
On top of its value, there are other important features
 duration
 payments
 geography, jurisdiction
 fields of use
 conditions (“milestones”, “termination”)
 confidentiality, responsibility…..
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42. The terms of a license
 Confidentiality
 Duration
 Well-defined work schedule
 Reporting obligations
 Liability
 Payment schedule
 Nature of the intellectual property
 Option term on license
 Scope of license
 Lump sum/Royalties
 Patent costs
 Ownership of intellectual property
 Ownership of improvements
 Infringements (who takes action)
 Termination
 Laws of the country
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43. The value of IP
Again… IP is intangible so its value is difficult (impossible?) to
assess
There are valuation techniques (just as for start-up valuation)
 25% rule
 Past investments
 Industry standards
But the value is negotiated and the price is fixed between a
buyer and a seller; it is the law of offer and demand.
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44. Example of royalty rates
Royalty Rates for In-Licensing by Industry
Industry 0-2% 2-5% 5-10% 10-15% 15-20% 20-25% >25%
Aerospace 50.0% 50.0%
Automotive 52.5% 45.0% 2.5%
Chemical 16.5% 58.1% 24.3% 0.8% 0.4%
Computer 62.5% 31.3% 6.3%
Electronics 50.0% 25.0% 25.0%
Energy 66.7%
Food/Consumer 100.0%
General Mfg. 45.0% 28.6% 12.1% 14.3%
Governmetn/University 25.0% 25.0% 50.0%
Health Care 3.3% 51.7% 45.0%
Pharmaceuticals 23.6% 32.1% 29.3% 12.5% 1.1% Royalty Rate Distribution
LER 0.7% 0.7%
Telecommunications 40.0% 37.3% 23.6%
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Frequency
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0
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4.
7.
Royalty Rate
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45. Example of royalty rates
Earned Up-Front Minimum
Source : G.Gorey &
Technology / Industry Royalty Payments Payments E.Kahn, Genetic
Reagents/Process 1-3% Patent Costs $2-10K Engineering News, July-
August 1991
Reagents/Kit 2-10 Patent Costs $2-10K
Diagnostics In Vitro 2-6 $5-20K $2-60K
Diagnostics In Vivo 3-8 $5-20K $2-60K
Therapeutics 4-12 $20-150K $20-150K
Medical Instrumentation 4-10 $5-150K $5-20K (Yr 1)
Industry Average Median Max Min Count
Chemicals 4.7% 4.3% 25.0% 0.1% 78
Internet (incl. software) 11.8% 8.8% 50.0% 0.3% 88
Telecom (excl Media) 4.9% 4.5% 15.5% 0.4% 73
Consumer Gds, Rtl & Leis 5.5% 5.0% 28.0% 0.1% 98
Media & Entertainment 9.1% 5.0% 50.0% 2.0% 25
Food Processing 3.2% 2.8% 10.0% 0.3% 38
Medical/Health Products 6.1% 5.0% 77.0% 0.1% 376
Pharma. & Biotech 7.0% 5.0% 50.0% 0.0% 458
Energy & Environment 5.0% 5.0% 20.0% 1.0% 107
Machines/Tools 5.2% 4.5% 25.0% 0.5% 90
Automotive 4.3% 3.5% 15.0% 0.5% 59
Electrical & Electronics 4.2% 4.0% 15.0% 0.5% 139
Semiconductors 4.3% 3.0% 30.0% 0.0% 75
Computers & Office Equip 5.3% 4.0% 25.0% 0.2% 73
Software 11.5% 6.8% 70.0% 0.0% 147
Industry Summary 6.40% 4.80% 1,924
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46. An example of royalty rates
A raw idea is worth virtually nothing, due to an astronomical risk factor
A patent pending with a strong business plan may be worth 1 %
An issued patent may be worth 2 %
A patent with a prototype, such as a pharmaceutical with pre-clinical testing may be
worth 2-3 %
A pharmaceutical with clinical trials may be worth 3-4 %
A proven drug with FDA approval may be worth 5-7 %
A drug with market share, such as one pharma. distributing through another, may be
worth 8-10%
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47. IP and Venture Capitalists
 Show you thought about an IP strategy
 Disclose your analysis, the strengths and weaknesses
 but…
Never say (or think…) that your IP is a major asset for your
business; it is a protection tool but it does not bring that much
guarantee.
Mention you have IP and focus on other elements of strength
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48. IP and VCs (according to Guy Kawasaki)
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49. IP and VCs (according to Guy Kawasaki)
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50. As a conclusion…
An investment! Not a guarantee!
Intellectual Property
contributes to create value for a company.
The company should define its IP strategy in order to
optimize the value, with its partners:
 patent attorneys
 investors
 customers
 competitors
 licensees
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